The Court of Milan returns on the forfeiture of the trademark

The Court of Milan, with its ruling no. 5205 of 7th September 2020, has returned to the issue of the forfeiture of trademark and the suitability of certain factual circumstances to prevent the expiry of the five-year term pursuant to Article 24 of the Industrial Property Code.

The rule, in fact – which has its source in the so-called statute of free appropriateness of distinctive signs on the market if they are not used by the owner – provides for the forfeiture of the trademark in case of non-use within five years from registration or in case of suspension of the use of the distinctive sign for an uninterrupted period of five years, except when the non-use is justified by a legitimate reason.

The law clarifies that, in order to avoid revocation, the use of the trademark must be effective; this means that the use must not be merely symbolic, sporadic or fictitious but must find a precise economic justification because it must distinguish the goods or services from those of other operators on the market. In this way, therefore, the distinctive function of the trademark is preserved because the law prevents that distinctive signs that are not actually used could monopolize the market for an indefinite period of time.

The above sentence, therefore, going back to clarifying the applicative contours of Art. 24 of the Industrial Property Code, concerned a dispute concerning a perfume trademark in which the defendants, cited for counterfeiting of the trademark, claimed legitimate use because the owner doesn’t use for five years.

The owner of the trademark, who has the burden of proof the effective use of trademark in order to preserve its registration, stated that he had carried out a series of preparatory activities aimed at planning the launch of the distinctive sign capable of interrupting the expiry of the term of forfeiture and, in addition, he documented health problems which, in his opinion, would legitimize the failure to use it for five years.

Well, the Court of Milan, reiterating that the actual use should be recognized only when the distinctive sign is actually used on the market for the products and/or services for which it was marked, ruled out that the activity carried out by the plaintiff could constitute a useful element to interrupt the forfeiture, since it was merely a preparatory activity that had stopped at a purely internal stage without appreciable reflections on the market and without effective distribution to the public.

On the other hand, with regard to the legitimate reason of impediment represented by the health problems complained by the trademark owner, the Court of Milan considered this circumstance not to be an obstacle to the revocation: the use of the distinctive sign, in fact, is referable to a business reality and not to the natural person with the consequence that the trademark could be exploited also by third parties through the granting of licenses of use. In fact, the Court underlines, “only obstacles having a sufficiently direct link with the trademark, independent of the owner’s will and such as to make brand’s use impossible, can be qualified as legitimate reasons for non-use, suitable to prevent the remedy of revocation“.

The judgement in question, therefore, is in the line of jurisprudence that considers that the legitimate reason capable of preventing revocation occurs all those times when there are obstacles to use that are independent of the owner’s will and have a direct link with the trademark such as to make use impossible or unreasonable.


Desiree Pasquariello